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Patent War Declared: Kodak Sues Apple Over iPhone & Mac

In news that has already spread across the Internet like a wildfire, Eastman Kodak Company has sued Apple, Inc., alleging that Apple infringes numerous Kodak patents associated with the iPhone, iPod Touch and various Mac computers. News reports also indicate that Kodak has sued Research in Motion (RIM), maker of the Blackberry. As yet I have not seen a copy of the complaint filed by Kodak against RIM, but courtesy of the Docket Report, the two complaints filed by Kodak against Apple in the United States Federal District Court for the Western District of New York appeared in my inbox this morning. As should be apparent to everyone, the Docket Reportis a new advertiser on IPWatchdog.com, so you can take this with a grain of salt if you like, but the truth is the Docket Report is exceptionally detailed and shows up every morning with dozens of patent complaints and district court Orders. If you are trying to keep up with what is going on in the world of patent litigation it is an absolute must, and the best part is you can try it for free for a full month.

Returning to the matter at hand here, there is one thing that must be said immediately about Kodak suing Apple and RIM. Typically when large corporations sue other large corporations there is not all that much interest in taking the matter all the way through litigation to a court ordered disposition. Most times large companies sue each other for posturing purposes and to facilitate getting a better deal at the bargaining table. While there is some evidence to suggest that could be the case, with the presence of Kodak in any patent litigation one must stand up and take notice. Kodak was the defendant in the 15-year patent battle with Polaroid over instant camera technology. Kodak ultimately paid $925 million to Polaroid in 1991, and both Kodak and Polaroid spent several hundreds of millions of dollars in attorneys fees. So make no mistake, Kodak is no stranger to high stakes patent litigation. So pundits and observers can sit back and be thankful for a true heavyweight match of epic proportions could well be on the horizon and could well run for many years to come.

As I looked through the two complaints filed, and wondered exactly why Kodak would file two separate complaints rather than a single complaint, I immediately noticed a stark difference between this lawsuit and those that are started by so-called patent trolls. I am on record as saying I detest the complaining about patent trolls who are seeking to enforce rights they own fairly and squarely, but in many instances true patent trolls file complaints that seem woefully inadequate to me. Patent litigation by ambush shouldn’t be the rule, and it should be stopped. This is particularly true given how easy it is to actually put together a complaint that provides information to the defendant about the claim being brought. These complaints are exceptionally short, and as is typical they are even double spaced in terms of line spacing, but they clearly put Apple on notice with respect to the theories and the claims that are believed to be infringed.

In the first complaint Kodak alleges that Apple is liable for direct infringement, inducing others to infringe and contributory infringement of U.S. Patent No. 6,292,218 and U.S. Patent No. 5,493,335. More specifically, the complaint explains that it is believed that by contracting for the distribution of infringing mobile devices for sale by retail sales outlets, by marketing the infringing mobile devices, by creating and distributing user manuals for the infringing mobile devices, and by supplying warranty coverage Apple infringes Claims 15, 23, 25, 26 and 27 of the ‘218 patent. The complaint further alleges that the importation into the United States of products such as the iPhone 3GS mobile device infringe Claim 1 of the ‘335. This complaint, unlike the second complaint, does not specifically allege Apple was put on notice, but explains that Apple will be put on notice at least no later than when they receive service of the complaint. It is alleged that Apple is believed to have actual knowledge of infringement even before the complaint was filed.

In the second complaint Kodak alleges again that Apple is liable for direct infringement, inducing others to infringe and contributory infringement, this time with respect to U.S. Patent No. 5,226,161, U.S. Patent No. 5,421,012, and U.S. Patent No. 5,303,379. More specifically, The complaint alleges that Apple has infringed and continues to infringe the ‘161 patent, by using, selling and/or offering to sell, within the United States, and/or by importing into the United States, products, including, but not limited to, the Mac mini, iMac, Mac Pro, Xserve Nehalem, MacBook, iMac, iPhone 3GS, and iPod Touch, which embody and/or practice Claim 1 of the ‘161 patent. The complaint further alleges that Apple has infringed and continues to infringe the ‘012 patent, by using, selling and/or offering to sell, within the United States, and/or by importing into the United States, products, including, but not limited to, the Mac mini, iMac, Mac Pro, Xserve Nehalem, MacBook, iMac, iPhone 3GS, and iPod Touch, which embody and/or practice Claim 1 of the ‘012 patent. Finally, the complaint asserts that Apple has infringed and continues to infringe the ‘379 patent, by using, selling and/or offering to sell, within the United States, and/or by importing into the United States, products, including, but not limited to, the Mac mini, iMac, Mac Pro, Xserve Nehalem, MacBook, iMac, iPhone 3GS, and iPod Touch, which embody and/or practice Claim 1 of the ‘379 patent.

With respect to the second complaint, Kodak alleges that Apple was put on notice of the infringement of the ‘161 patent, the ‘012 patent and the ‘379 patent through a series of communications and meetings between Kodak and Apple beginning at least as early as November, 2007. The second complaint suggests that it is believed that Apple knew of the infringement earlier than November 2007. Perhaps this is why the complaints were separated, I am not sure. There must be a reason why they were separated because it seems all but certain the cases will be consolidated for trial. In any event, the fact that Kodak and Apple have been talking about these patents for over 2 years suggests that these litigations have more to do with posturing than anything else. Still, as pointed out above, making the assumption that Kodak is not willing to go to the mattresses if necessary would seem to be fool-hardy, at least if you ask me.

Insofar as the relief sought by Kodak, it is pretty standard. They do not announce a dollar figure, although if there is infringement found you can bet the dollar figure would be attention grabbing. Kodak does ask for both preliminary and permanent injunctive relief, compensatory damages, enhanced damages because they believe the infringement was willful and, of course, they want their costs and fees, including attorneys fees, which can be recovered in extraordinary cases where there is egregious infringement or litigation misconduct. Recovering attorneys fees in patent litigation is not easy, but possible, and if Kodak is going to the mattresses attorneys fees could quickly blow through 7 figures and into the 8 figure range, and that is just getting started!

Look for much more interesting news to break, and expect either a quick settlement, which I suspect is unlikely, or the mother of all preliminary injunction hearings, which as a commentator I am hoping for!

The Author

Gene Quinn
is a patent attorney and the founder of IPWatchdog.com. He is also a principal lecturer in the PLI Patent Bar Review Course, which helps aspiring patent attorneys and patent agents prepare themselves to pass the patent bar exam.

Gene’s particular specialty as a patent attorney is in the area of strategic patent consulting, patent application drafting and patent prosecution. He has worked with independent inventors and start-up businesses in a variety of different technology fields.

Gene is admitted to practice law in New Hampshire, is a Registered Patent Attorney licensed to practice before the United States Patent Office and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. As a patent attorney he is able to represent inventors and businesses seeking patents across the United States.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 7 Comments comments.

MikeJanuary 15, 2010 3:40 pm

It is not beyond the realm of possibilities that Kodak may have invented the image preview and capture system for cameras. I thought the patent documents and claims might add something to this conversation. I don’t know if there were previous image capture video cameras available that might be art against these patents, but the priority dates are fairly early (1993 & 1987). Were there any cameras with a moving preview screen back then?

http://v3.espacenet.com/textdoc?DB=EPODOC&IDX=US5493335
1. An electronic camera adapted for processing images of different resolution, said camera comprising: an image sensor for generating a baseband image signal representative of color image pixels arranged in vertical and horizontal directions as obtained from a two-dimensional array of photosites covered by a pattern of luminance and chrominance color filters; a buffer memory having sufficient capacity for storing the color image pixels as baseband signals corresponding to at least one image; an output memory, connected subsequent to the buffer memory, for storing processed image signals obtained from the buffer memory; a resolution mode switch for selecting a pixel resolution of the image by specifying an order in which the color image pixels are selected for storage in both vertical and horizontal directions, said order including a full resolution mode in which all color image pixels are selected and at least one reduced resolution mode in which less than all color image pixels are selected; a controller responsive to the pixel resolution selected by the resolution mode switch for accordingly changing the number of horizontal and vertical pixels that represent the image, said controller effecting a subsampling of the color image pixels for the reduced resolution mode; and means for storing the selected color image pixels in said output memory, whereby said output memory is able to store more images in said reduced resolution mode than in said full resolution mode.

http://v3.espacenet.com/textdoc?DB=EPODOC&IDX=US6292218
1. An electronic still camera for initiating capture of a still image while previewing motion images on a display, comprising: (a) an image sensor having a two-dimensional array of photosites covered by a mosaic pattern of color filters including at least three different colors for capturing images of a scene, each captured image having a first number of color pixel values provided in a first color pattern; (b) motion processing means for generating from the captured images, a second number of color pixel values provided in a second color pattern having at least three different colors and representative of a series of motion images to be previewed, the second number of color pixel values being less than the first number of color pixel values, and the second color pattern being different from the first color pattern; (c) a color display for presenting at least some of the motion images of the series of motion images corresponding to the captured images of the scene, the color display having an arrangement of color display pixels including at least three different colors in a pattern different from the first color pattern; (d) a capture button for initiating capture of a still image while previewing the motion images presented on the color display;
(e) still processing means for generating a third number of color pixel values including at least three different colors representative of a processed captured still image; and (f) a digital memory for storing the processed captured still image.

http://v3.espacenet.com/textdoc?DB=EPODOC&IDX=US5226161 (from Wang)
1. A data processing system having processing means for performing operations with respect to a multiplicity of different types of data and wherein the data is contained in data structures, the system comprising: (A) a plurality of programs, executed by said processing means, for performing operations with respect to the different types of data, each program including (a) a means for performing at least one operation with respect to at least one corresponding type of data, the means for performing at least one operation being responsive to a request to perform an operation of the at least one operation with respect to identified data of the corresponding type for performing the requested operation with respect to the identified data, (b) means for identifying a reference to a second type of data in a data structure containing a first type of data, (c) means responsive to the identification of a reference to a second type of data for generating a request for an operation with respect to the second type of data, each request including an identification of the second type of data and at least one operation to perform with respect to the second type of data, (B) means for receiving from a requesting program an identification of a second type of data, (C) means for using the received identification of the second type of data to identify a program that includes a means for performing the least one operation upon the identified second type of data, and (D) means for invoking the identified program and communicating to the identified program the identification of the second type of data, wherein a program can both request invocation of other programs and can itself be invoked by other programs.

http://v3.espacenet.com/textdoc?DB=EPODOC&IDX=US5421012
1. A method of operating a digital computing system to perform desired data processing operations, said computing system including a programmable processor, a main memory for storing active programs and data, a mass storage memory for storing inactive programs and data, and a display device for visually displaying images in response to processing operations, the method comprising, in combination, the steps of: storing in the mass storage memory a plurality of application programs, each of the application programs being executable independently of each other by said processor, and any given one of the application programs including means for performing one or more generic operations specified by standard requests on corresponding typed data objects stored in the mass storage memory each of said corresponding typed data objects having an associated type classification which indicates an internal structure and interpretation of the data contained in said corresponding typed data objects defined by said given application program, storing in said mass storage memory a database containing entries which, given a specified operation and a specified object type classification, designate a particular one of said application programs that includes means for performing said specified operation on typed data objects having said specified type classification, and storing in said mass storage memory a set of application integration service programs which comprise, in combination, a multitasking application manager program for running selected ones of said application programs concurrently as peer processes in response to program invocation requests from a user or from an already running application program, and a library of common subroutines selectively and individually callable by running application programs, said library including one or more invocation subroutines callable from a first running application program which performs operations on a first data object, said invocation subroutines including means for receiving a request from said first running application program to perform a designated operation on a second data object having a designated object classification, said invocation subroutines further including means responsive to said request for obtaining from said database the identity of a selected second application program including means for performing said designated operation on objects having said designated type classification, and said invocation subroutine further including means for transmitting an invocation request to run said second application program and for transmitting to said second application program a request to perform said designated operation on said second data object.

http://v3.espacenet.com/textdoc?DB=EPODOC&IDX=US5303379
1. A method of operating a digital computing system to perform desired data processing operations, said computing system including a programmable processor, a main memory for storing active programs and data, a mass storage memory for storing inactive programs and data, and a display device for visually displaying images in response to processing operations, the method comprising, in combination, the steps of: storing in the mass storage memory a plurality of application programs, each of the application programs being executable independently of each other by said processor, and any given one of the application programs including means for performing one or more generic operations specified by standard requests on corresponding typed data objects stored in the mass storage memory each of said corresponding typed data objects having an associated type classification which indicates an internal structure and interpretation of the data contained in said corresponding typed data objects defined by said given application program, storing in said mass storage memory a database containing entries which, given a specified operation and a specified object type classification, designate a particular one of said application programs that includes means for performing said specified operation on typed data objects having said specified type classification, and storing in said mass storage memory a set of application integration service programs which comprise, in combination, a multitasking application manager program for running selected ones of said application programs concurrently as peer processes in response to program invocation requests from a user or from an already running application program, and a library of common subroutines selectively and individually callable by running application programs, said library including one or more invocation subroutines callable from a first running application program which performs operations on a first data object, said invocation subroutines including means for receiving a request from said first running application program to perform a designated operation on a second data object having a designated object classification, said invocation subroutines further including means responsive to said request for obtaining from said database the identity of a selected second application program including means for performing said designated operation on objects having said designated type classification, and said invocation subroutine further including means for transmitting an invocation request to run said second application program and for transmitting to said second application program a request to perform said designated operation on said second data object.

Gene, so sorry for the hijack, but I have an off-topic question I can’t answer for myself.

Can anyone point me to a resource for BPAI personnel and production information? I’m particularly interested in dates of appointment for BPAI judges (and by whom appointed); ages and/or work history at USPTO of BPAI judges; identities of patent attornies or clerks working in the BPAI chambers programs; request for rehearing rates and results before the BPAI; and/or production requirements before the BPAI.

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